Salvitis Pty Ltd v Registrar of Trade Marks

[1907] HCA 4

4 C.L.R.] OF AUSTRALIA.

941

[HIGH COURT OF AUSTRALIA.]

SALVITI8 PROPRIETARY LIMITED .

A p p e l l a n t s ;

REGISTRAR OF TRADE MARKS .

R e s p o n d e n t .

Trade mark—Application fo r recjUlration— Trade mark registered uiidtr Trade

H. C. of A.

Marks Act o f a State— Trade Marks Act 1005 (Ao. 20 o f 1905), secs. 8, 9, 52.

1907.

All applications for registration of trade marks under the Trade Marks Act j I i;lbouknk

1905, including those pursuant to secs. S and 9, are made under sec. 32.

March 18

Therefore the Registrar is not entitled to refuse an application which pur­

Griffith C.J.,

B.'irtoii,

ports to be made under sec. 32 merely because the mark is already registered O'Cotinor.

Hipf'ina .JJ.Isaacs and

as a trade mark under the Trade Marks Act of a State, but he must deal with

the application on its merits, and give to the applicant such registration as he

is entitled to.

I t was alleged th a t the applicants, a Jo in t Stock Company were identical with a company originally registered under another name, but which had lawfully changed its name.

Held, tha t this was a matter of fact to be ascertained by the examiner in dealing with the applioalion, and th a t if the fact were proved he must pro­ ceed with the application on the merits.

A p p e a l from the Registrar of Trade Marks.

Tlie Salvitis Proprietary Limited applied for registration under the Troth Marks Act 1905 of tlie word “ Salvitis” as a trade mark in respect of cltemical substances used for agricultural, horticultural, veterinary and sanitary purposes. The application was in form appropriate to a registration under sec. 32 of the Act. The Examiner reported, as was the fact, that the same mark had been registered as a trade mark in New South Wales, Vic­ toria, Queensland, Western Australia and Tasmania, under the

942 HIGH COUUT

[1907.

H. C. OF A. laws of the respective States. On beino- informed of tliis by tlie

Registrar, the coinpan} ̂by their secretary made an affidavit stat-

S a lv itis iiig that the trade marks were registered in tlie .several States in

the name of the Live Stock Ailments Remedy Proprietary Lim­

R eg istk ak r.ited, that that company was the same as the applicant companj’,

OF T kaue and that the name had been changed in accordance with the

M a r k s .

Victorian Companies Acts, and that the company had a new certificate of incorporation i.ssned to it pnrsnant to sec. 22 of the Companies Act 1890.

The Registrar refused the application on the ground that the mark was on the registers of the States as for a company having another name, that the application should have been made in the pi-escribed form suitable for an application under sec. 8 of the Trade Marks Act 1905, and that, in his opinion, the course adopted by the applicants had been taken with a view to avoid the exercise by the Registrar of the powers conferred on him liy sec. 8.

From this refusal the applicants appealed to the High Court, and Isaacs J. I'eferred the appeal to the Full Court.

Mitchell K.C. (with him Mann), for the applicants. If an applicant can establish a right to registration under sec. 32 of the Trade Marks Act 1905 he may apply under that section for regis­ tration of a trade mark, notwithstanding that he is registered in respect of the same mark in a State. If he cannot bring himself within that section then he may fall back on secs. 8 and 9.

Starke, for the Registrar of Trade Marks. It does not appear from the affidavit in what country the company is registered, and upon that depends whether they are justified in changing their name.

[ I s a a c s J . referred to Ex parte New'Ormonde Cycle Co.

Ltd.

( I ) - ]

When a trade mark is registered under the Trade Marks Act 1905, the registration under a State Trade Marks Act ceases: See sec. 8 (6). All the Registrar contends for is that when there is an application for the registration of a trade mark already registered in a State, there must be a declaration as to the facts.

(1) (1896) 2 Ch., 520.

4 C.L.U.] OF AUSTRALIA.

943

Mitchell K.C. in reply.

H. C. OF A.

1907.

The iudo-inent of the Court was delivered by” . .

' '

S a l v iiis

G r i f f i t h C.J. All applications under the

Trade Marks Act P k o pr ieta k v

1905 are really made under sec. 32, because, with regard to the

'

V.

R eg istr a r

applications referred to in secs. 8 and 9, tliey are expressly madeOF T ra de

subject to the provisions of sec. 32, except as otherwise provided.

M a r k s .

Upon an application to the Registrar for registration of a trade mark, his duty is to ascertain what the applicant’s rights are. If it appears to him from any source that the applicant’s rights may be (jualitied by secs. 8 or 9, or for any other reason, he is entitled to ask for reasonable information from the applicant. If the applicant refuses to give that information, he is not likely to receive much con.sideration from this Court. But when the information has been given, it is the duty of the Registrar to give the applicant that to which he is entitled. Whether the application is in one form or another does not matter much, especially as the rules provide for any necessary amendments being made. The point about the change of the company’s name is a matter with which the Registrar must deal on the application, on ascertaining the actual facts. With this intimation of our opinion we refer the matter back to the Registrar to proceed with

the application.

-

Application remitted.

Solicitors, for appellants. Waters <5 Crespin, Melbourne.

Solicitor, for Registrar, C. Powers, Crown Solicitor.

B. L.